For any brand owner, the accordance of well-known status to his brand is a “milestone.” The protection afforded to a well-known trade mark goes beyond traditional standards and focuses on protecting the distinctiveness of a trademark as against free riding and defilement. In India, the factors which are to be considered while determining the well-known status of a trade mark, are, inter alia ,the duration, extent and geographical area of use, promotion or any registration or application for registration of the trade mark; and record of successful enforcement of the rights in the trade mark, in particular, the extent to which the trade mark has been recognized as a well-known trade mark by any court or Registrar under that record.   Further,India’s new trade marks rules have created a procedure to recognize well-known trade marks by allowing the proprietor of a trade mark to get the mark registered as well- known, without the mark being a subject of any contentious proceeding. Before the enactment of the new rules, marks were only declared as well-known during the proceedings of opposition or rectification or infringement. The competent authority to declare a mark as “well-known” In practice, courts have declared marks to be well-known.   For instance, marks such as MARS, PLAYBOY, REVLON, NESTLE, MICROSOFT etc. have been declared as well-known trade marks by the Delhi High Court. These marks also feature in the list of well-known trade marks available on the Trade Marks Registry’s (“Registry”) website. However,in a case, Texmo Industries vs 3 Mr. Roshan Kumar [C.S. No. 357/2017] before the Madras High Court, the issue was whether a High Court had the power to declare a trade mark as well-known.In this particular case, Texmo Industries, inter alia, prayed that its trade mark TEXMO be declared a well-known trade mark.After granting an initial interim injunction,the Madras High Court allowed Texmo Industries’ motion for summary judgment for various reliefs. In relation, however, to the relief to declare TEXMO as a well-known trade mark, the suit has been kept pending until a larger bench of the court first addresses the following question, namely, “whether the Court would be the appropriate authority for declaration of a mark as a well-known mark or is it only the Registrar who is empowered to declare so”. In this case, the judge was of the opinion that the court cannot pass an order declaring a mark as a well-known trade mark.  Rather only the Registrar of Trade Marks has the exclusive power to accord well-known status to marks.   According to the court, the text of the Trade Marks Act, 1999 (“the Act”), makes it clear that the Registrar is the proper authority to adjudicate the well-known status of a trade mark. The court further held that the Registrar is better suited to make investigations on this question and consider the various factors enumerated under Indian law. It was the opinion of the court, that amongst the various factors enlisted in the Act which are to be considered while determining the well-known status of a trade mark, the court can only determine one factor, namely, the well-known nature of a mark within one relevant section of the public. For instance, in this case, the Plaintiff was manufacturing motor pumps used in the agricultural sector and if substantial number of persons in the agricultural field are aware of and opt for the Plaintiff’s TEXMO products, then certainly a determination can be made that the mark TEXMO is well-known to that particular section of the public. However, such determination may only be one amongst many factors which contributes to the well-known status of the trade mark. Thus, the issue whether the court can declare that the mark is a well-known trade mark is the issue which needs to be addressed. Since there has been an earlier dissenting judgment by the Madras High Court on the very issue of the court’s power to declare a trade mark as well-known, the judge referred the question to a higher bench. Why it is difficult to accept this interpretation? Although the Registrar seems to be well-placed to evaluate the various factors listed in the Act and to determine the well-known status of a trade mark, in my opinion,the court of appropriate jurisdiction is also similarly placed in terms of legal expertise and the power to requisition of documents or evidence, required for such determination. As stated earlier, courts have declared several trademarks to be well-known in previous cases, and such marks also feature in the list of well-known marks available on the Registry’s website. Further,a bare reading of the relevant rules and the relevant form that is required to be filled for determination of a mark as well-known, shows that the Registrar does not make or have the power to make any special investigation that is beyond the ability and scope of a court. It is pertinent to mention here, that prior to the express provision of applying for a mark to be declared as well-known, the most common mode of getting a mark recorded as well-known in the Registry records, was by alluding to a favorable court order and requesting the Registry to include the mark in the list of well-known marks available on its website.   Dilemma posed by the judgment The foremost consideration raised by the Madras High Court’s interpretation of the Registrar being the sole authority to determine the well-known status of marks,is how such an exclusive jurisdiction of the Registrar would play out in cases where the plaintiff couches his cause of action within the law on well-known mark. If the Madras High Court’s interpretation is accepted, then the plaintiff might have to first approach the Registrar to get his trade mark recorded as well-known, before instituting any action on the basis of the well-known status of his mark. Further, if such exclusive jurisdiction lies with the Registrar, another dilemma which is posed is the ability of a court to hear appeals to the Registrar’s decision in such matters. Lastly, it is difficult

The Trump campaign’s use of Rihanna’s ‘Don’t Stop the Music’ at a political rally was, ironically, met with cease and desist demands. Although POTUS eventually acceded, many commentators felt that the singer’s demands may have had weak legal footing. Since venues booked by the Trump campaign likely owned blanket performance licenses, their use of the singer’s music was possibly authorized to begin with. While the fine print of the performance license would have determined liability in the US – in India, it wouldn’t have mattered. Rather, in India, an artist would have a more straightforward claim to injunctive relief. This post explains why. The Berne Convention recognizes that besides copyright, an artist has a right against acts done on and in relation to his work that harm his reputation. Such rights are widely known as an artists’ moral rights. Both India and the US recognize these rights, which can neither be licensed, nor assigned. Consequently, a debate ensued on its limits. Predictably, licensing businesses wanted protection from unforeseeable liabilities. For obvious reasons, it was agreed that the failure to display a work to the author’s satisfaction would not impinge his moral rights. However, a more debatable limitation was also considered – is it possible for a licensing company to get an artist to waive his moral rights? While the US legislated to the affirmative in the 1990s by introducing the Visual Artists Rights Act of 1990 (VARA), the Indian government is yet to take a stand. Until it does, the answer to whether moral rights waivers are enforceable in India would be dictated by courts. In India, you can waive the right to be protected by a law preserving your private rights or interests. You cannot, however, waive the right to be protected by a law that protects public interest along with your private interests. While some jurisdictions recognize the right against harm to one’s reputation as entirely a private right, India does not. Rejecting a constitutional challenge to India’s criminal defamation law in May 2016, the Indian Supreme Court acknowledged that although reputation is akin to private property, laws meant to protect reputation are, in fact, meant for public good. See: Subramanian Swamy v. Union of India, decision dt. May 13, 2016 in WP (Criminal) 184/2014. Thus, courts in India would likely consider the protection of an author’s moral rights as a matter of public interest, and consequently, “moral rights waiver” provisions in agreements to be unenforceable. Since the Indian Supreme Court has acknowledged that laws meant to protect reputation are meant for public good, licensing businesses would find it difficult to enforce moral rights waiver clauses before civil courts. If an artist can show that a political campaign harmed his reputation by using his music, he would likely get injunctive relief – even if he waives moral rights in writing by license.

With the rapid growth in the counterfeiting industry, law has to step in to prevent it. Indian law has approaches to check the importation and exportation of those counterfeit goods that infringe any intellectual property. One such approach is the custom recordation of an intellectual property, the validity of which is five years. All the types of intellectual property (trademarks, copyrights, patents, design, geographical indications) can be recorded with the customs authority. The procedure to record the intellectual property is dealt under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. If you are suspicious that goods infringing your intellectual property are being imported into the Indian Territory, you can inform the customs authority by giving them a notice requesting suspension of clearance of such infringing goods. In order to record an Intellectual Property with the customs authorities in India, you can register through the website of the customs authority. You have to upload the relevant documents as mentioned on the website of the customs authority. The documents that are to be submitted are: Apart from the above-mentioned documents, you are also required to provide a list of countries in which genuine goods are manufactured, a list of countries from which genuine goods are imported into India and a list of those countries from which the infringing goods are suspected to be imported. Generation of a Unique Temporary Registration Number- After successful submission of the details and the documents, a Unique Temporary Registration Number (UTRN) is generated. You have to submit the UTRN along with the copies of the uploaded documents to the IPR cell of the relevant Custom House. Generation of a Unique Permanent Registration Number- Within 30 days of the submission of the UTRN, you will receive a Unique Permanent Registration Number (UPRN). The custom authorities will then inform you whether the request has been registered or not. What happens after registration of the request? Once the request is registered, the clearance of the suspected infringing goods can be suspended by the customs authorities. They will also notify you and the importer about the suspension of the clearance of goods. You are then required to join the proceedings within a period of ten days from the receipt of the notice by the customs authority, which is extendible up to another ten days. In case of perishable goods, the time period for suspension is three to four days. However, in case of failure to join the proceedings within the stipulated time, the customs authority may clear the suspected goods. Upon joining the proceeding, you may examine the veracity of the suspected goods. Once the goods are examined, if it is found that they infringe your intellectual property rights, the customs authority may destroy the goods. The cost of such destruction and disposal of infringing goods shall be borne by you. The customs authorities further keep a check on the re-exportation or re-importation of such infringing goods. All of this suggests that custom recordation of intellectual property in India is a hassle-free process and is therefore advisable to circumvent a difficulty like counterfeiting.

The Geographical Indications Registry, Chennai, on Wednesday, October 3rd, 2018, issued a Certificate of Registration for “Alphonso”, in respect of Horticulture (mangoes) falling under class 31. The Geographical Indication (“GI”) for Alphonso has been limited to the Konkan region of Maharashtra and comprises of five districts in the Konkan area, namely, (i) Palghar, (ii) Thane (including Greater Mumbai and Mumbai Suburban), (iii) Raigad, (iv) Ratnagiri and (v) Sindhudurg. The application to register “Alphonso Mango” as a GI was originally filed by Dr. Balasaheb Sawant Konkan Krishi Vidyapeeth, an agricultural university in the Konkan region. Subsequently, this application was merged with two other applications for Ratnagiri Alphonso Mango and Devgad Alphonso Mango, and the nomenclature of the merged GI registration was revised to “Alphonso”. With this, the number of registered GIs in India (since the first GI registration for Darjeeling Tea in 2004), now stand at three hundred and twenty-six (326) as of October 2018. In addition to achieving the objectives of protection, promotion and enforcement of GIs as enumerated in the Geographical Indications of Goods (Registration and Protection) Act, 1999, (“GI Act”) what needs to be seen now is the implication of this GI certification on the marketability and supply of Alphonso mangoes in the domestic and international market. Even though the GI registration for Alphonso covers around 1,25,000 mango growers in the Konkan region, the owners of the GI registration (being societies representing Alphonso Mango growers in each of the five aforementioned districts) are concerned with the generic term “Alphonso” covering mango varieties of all the five districts and are of the view that the applications for the Ratnagiri Alphonso Mango and Devgad Alphonso Mango should not have been clubbed to one common application that covers all five districts. They believe that unless Alphonso mangoes from each district are not recognised individually, farmers from these areas will not be able to reap the benefits that they should be entitled to, based on the region-specific reputations of the Alphonso mangoes. If the mango growers from each district can demonstrate that the type of Alphonso mangoes grown in their region has a reputation/characteristic/quality that is unique to that geographical location, there is nothing in law to prevent them from applying for individual protection of such areas cultivating these different varieties of Alphonso mangoes that would fetch the local farmers premium rates for the same. Further, in the domestic market, this decision is also coming under scrutiny for precluding mango growers in regions other than the Konkan region, namely, neighbouring states like Gujarat, Karnataka and parts of Pune, from claiming rights overthe varieties of Alphonso mangoes growing in these regions. It is pertinent to note here that limiting the geographic indication of Alphonso mangoes to the Konkan region will not only disrupt theexisting export income for mango growers outside the Konkan region, but will also prevent them from promoting their mangoes under the Alphonso tag. This issue was dealt with by the GI Registry in the Basmati Rice case,which opened the Pandora ’s Box of public policy v. law. Basmati Ricewas granted GI certification in 2016, in respect of varieties grown in seven northern Statesof India.Consequently, the State of Madhya Pradesh (a State in Central India) also applied for GI protection for Basmati Rice grown in Madhya Pradesh. This move was received with major backlash from Agricultural and Processed Food Products Export Development Authority (APEDA), the registrant of Basmati Rice, who was concerned that such inclusion would dilute the exclusivity of Basmati Rice and thereby drive down prices. Notwithstanding market sensibilities, inclusion of Madhya Pradesh as a GI for Basmati Rice, might have put India directly in contravention with its obligations under the Trade Related Aspect of Intellectual Property Rights (TRIPS) Agreement. This is because under the TRIPS Agreement, a GI is defined as an identification of goods based on any intrinsic characteristic, quality or reputation of the goods, that is essentially attributable to its geographical location. In the case of Basmati Rice, APEDA’s main contention was that Madhya Pradesh neither has the heritage/history northe suitable climatic conditions needed for basmati rice cultivation. Moreover, people do not associate Basmati Rice as something that is unique to Madhya Pradesh. The GI Registry vide order dated March 15, 2018, rejected Madhya Pradesh’s plea, citing insufficiency of evidence, that was needed to satisfy the fundamental requirement of “Popular Public Perception” of Basmati cultivation in Madhya Pradesh. This decision, although will not prevent Madhya Pradesh from growing rice, but will restrict it from naming rice grown in the State as “Basmati”. In light of this, it will be interesting to see if states like Gujarat and Karnataka, where Alphonso farming is prevalent, will fight it out and claim protection of Alphonso mangoes as a GI certification for themselves. As regards the protection available to Alphonso mangoes at the international level, TRIPS mandates two levels of protection under Article 22 and Article 23. Article 22 sets out a minimum standard of protection applicableto all types of GI, wherein a Member State is required to prevent acts of unauthorised use and unfair competition, which leads the public to believe, that the good in question has originated in a geographical area other than the true place of origin. This is the minimum protection that all Member States are obligated to provide to GI holders in their national laws. Therefore, under Article 22, a producer not belonging to the geographical region indicated by a GI, can claim the benefit of a GI certification, as long asthey have honestly indicated the true origin of a product, on the label/packaging. For example, the label for the very popular mango drink, Slice, currently indicates the source of the Alphonso mangoes, used in the production of the drink, as “Ratnagiri Alphonso mangoes”. This will be deemed as correct usage of the Alphonso GI certification under Article 22. Whereas, Article 23 offers an “extension”, i.e. a higher level of protection for GI designating only wines and spirits. UnderArticle 23, Member States are required to

Typically, a trademark is conceived to be a static, two-dimensional term or a design, which is used to uniquely identify certain goods or services. However, with the evolution of the digital era, companies strive to make their trademark striking and memorable. This is where fluid trademarks step in. As the name suggests, fluid trademarks, while maintaining a source identifying feature, constantly keep changing. They involve using and constantly creating new variations of the same basic trademark. These variations coexist along with the original mark by retaining the basic mark and bringing in new design elements. They reflect a new, modern approach to branding that has found great success in the Internet age. There can be many variations to a fluid mark, some of them may involve just ornamenting the static underlying mark. This way the essential characters of the mark remain constant even when new matter has been added to the mark. This approach is famously used by Google in its famous GOOGLE DOODLES, which retains most of its original word mark and logo, and the changes are brought by merely adding ornamentation to it. For instance, Google (India) commemorates the Indian Independence Day by ornamenting the basic GOOGLE mark with tri-colors of Indian National Flag. Another popular method to implement a fluid brand identity is to utilize the frame of the original mark or its three-dimensional character to fill it with different content. MTV adopted this method by using 3-D image of its basic MTV (Design) mark and filling it with popular content that is broadcast on the channel. Some fluid marks reinterpret the mark in different media. For instance, ABSOLUT vodka started a campaign where they invited various artists to depict the iconic shape of their vodka bottle, recast creatively in a variety of materials. The traditional view is that trademark rights are perpetual in nature. For example, use of a consistent color scheme will strengthen the rights of an owner over a period of time. Proponents of this theory advocate that experimenting with marks unless they have acquired a certain level of recognition with the target audience may dilute the mark or destroy its value.  Representation of a particular trademark in various forms, may only be useful when the mark is well-known in the trade and to the public at large. Else, the very purpose of creating such variations could stand defeated. Further, non-use of a mark in the form and the manner in which it is registered could even make it vulnerable to cancellation. Fluid marks are a fairly recent development in the Indian market and have not yet been tested in courts. It would not be an easy task for right holders to challenge third-party infringements, when the mark is subject to continuous alterations and no consistent use of variants of the mark has been established. However, India provides common law protection to fluid marks. In Proctor and Gamble v. Joy Creators, the Delhi High Court ruled that it is not necessary that a mark should be an exact replica of the registered trademark to constitute infringement. As per the court, “It will be sufficient if the plaintiff is able to show that the trademark adopted by the Defendant resembles its trademark in a substantial degree, on account of extensive use of the main features found in [a] trademark.” In India, fluid marks may even be protected as series marks. This would allow the proprietor to register a series of marks in respect of goods and services of interest. For instance, Perrier’s change of the word mark on its bottles from PERRIER to ‘SEXIER’ ‘CRAZIER’ ‘SASSIER’ etc., could even be protected as series marks. Trademarks, if presented in the same manner consistently over the years, may lose their appeal and become redundant to the public. In this digital era, fluid marks have become great tools for companies to engage with their customers and create long lasting impressions on the target audience. As companies strive to keep their brands relevant in the market and make efforts to humanize their brands by rejecting static brand identifiers, they must also consider the legal risks that are associated with such options. If used tactically, fluid marks would not only enhance brand appeal but also help build a better trademark portfolio.

On June 25, 2018, in a post titled “The Impact of Neuroscience on How Courts in India Typically Address Trademark Disputes”, Ryan Wilson, a senior associate at the firm, argued that under the traditional test of deceptive similarity followed by Indian courts for decades (i.e. perceiving rival marks through the lenses of an average consumer of imperfect recollection) brands are protected, “from multiplicity of associations in respect of the same kind of goods/services – unless the plaintiff proves that it has spent money and acquired a significant reputation in the mark, or if the defendants’ adoption of the mark is shown to be dishonest.” Since then, the Delhi High Court in The Gillette Company v. Tigaksha Metallics (Order dt. 09.07.2018 in CS(COMM) 153/2017) kicked up a hornet’s nest by issuing a temporary injunction on the basis of conceptual similarity alone upon recognizing developments in neuroscience research to deviate from the “traditional approach”. This post discusses how and why the Delhi High Court made this leap, and its implications of the future of trademark litigation in India. The rival trade dresses in The Gillette Company case (depicted below) are undoubtedly dissimilar in appearance and sound. Even assuming that the trade dresses depicted below, are indeed conceptually similar, this begets the question – should injunctions, and temporary injunctions in particular, be granted on the basis of conceptual similarity alone even though the rival trademarks are dissimilar in appearance and sound? In The Gillette Company the Delhi High Court acknowledged that it deviated from the traditional “test applied by [c]ourts since the beginning” i.e. assessing deceptive similarity between rival marks by factoring in the perception of a consumer of ordinary intellect. The Delhi High Court justified this departure in light of the “sweeping scientific advances in the study of the human mind and the way it works” that have unravelled “in the last . . . 50 years”. The court also acknowledges, that such advances in scientific literature warrant a greater emphasis on the conceptual similarity between marks “though on first blush, the possibility of confusing the two marks appeared to be remote.” In 2015, a two-judge bench of the Delhi High Court’s (in Shree Nath Heritage Liquor v. Allied Blender & Distillery, 221 (2015) DLT 359) recognized the importance of creating “a parameter within which marks conveying similar ideas should be accorded protection under trademark law.” The court recognized the harm that would accrue from the “slippery slope” i.e. “to what extent such monopoly over the sense relations be extended under trademark law?”. Citing an example of five brands of orange juice named after islands of the Caribbean, the court asked if naming a brand of orange juice after any other island X (which is not in the Caribbean) would also be prohibited in stating that island X is a hyponym of the broader hypernym ‘Island’? However, in The Gillette Company, the Delhi High Court appears to have taken the view that, in light of the nature of the rival trade dresses, the Caribbean Island-Orange Juice limitation discussed in Shree Nath Heritage Liquor was inapplicable. Considering this, and citing Nobel Laureate Daniel Kahneman’s book, “Thinking, Fast and Slow”, on the subject of how the human mind thinks and how we make choices, the judge felt that he “need say no more” (presumably because both trade dresses emphasize the idea of a “sword” on an in relation to identical goods i.e. razors) and ruled that the trade dresses depicted above were deceptively similar. All in all, it appears that the Delhi High Court has struck the right balance in factoring in neuroscience research while granting injunctions in trademark disputes. The approach taken in The Gillette Company suggests that courts would protect brands from multiplicity of association if the compliant brand is able to show that such protection would not result in a slippery slope that would preclude honest traders – who have adopted marks that could possibly conjure associations to the complainant brand.

This post discusses the Delhi High Court’s recent orders in matters involving the Christian Louboutin red shoe sole (shown below), and the conundrum that these orders have thrown up. In December 2017, the Delhi High Court granted an ex parte injunction restraining several third-parties from manufacturing and selling footwear with a red sole. In fact, in this case, the Court held that the red sole have become well-known.  The holding regarding the well-known status of the red sole was based on evidence led by Louboutin.  Subsequently, in May 2018, the Delhi High Court took a diametrically opposite view and held that the red sole as applied to shoes is not inherently distinctive. The most pivotal of the court’s observations was that the red sole did not even qualify as a mark, let alone a trade mark under the Trade Marks Act, 1999 (“Act”). In arriving at this decision, the Court relied on the definitions of a ‘mark’ and ‘trademark’ under the Act. As per the Act, a “mark” “includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”. While a trademark is defined as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours”. The Court, interestingly, was of the view that, a mark will first have to fall into the definition of a mark before it can qualify as a trademark.  The Court went on to say that, it is evident from a reading of the definition of a mark that a mark can only comprise of “a combination of colours” and cannot be a single colour. The Court also, quite vehemently, opined that the intent of the legislature was, clearly, to not allow proprietors to monopolize single colours. Surprisingly, the Court also relied on one of the exceptions to infringement of trademark provided under Indian law, whereby, if a mark is used in relation to goods or services that indicate the kind, quality or other characteristics of the goods or services, then it does not constitute infringement. The Court opined that “characteristic or characteristics of goods will include such functional aspects of the goods which would give an appeal or looks to the products/goods”. The Court, quite unpredictably, held that the application of colour to the sole of a shoe qualifies as a function being performed on the goods to enhance its appeal, and therefore, the red sole is part of the functionality of a shoe, and would fall into the exception carved out under the Act. Lastly, the Court stated that since the defendants were using this “functional” aspect of Louboutin’s trade mark with a distinctive word mark, “VERONICA”, no cause of action could be made out against them. Most recently, in a judgment pronounced on July 31, 2018, a Single Judge of the Delhi High Court granted Louboutin an ex-parte injunction against a defendant’s use of the red sole. A very interesting feature of this judgment is that the Single Judge talked about the Pantone number representing the colour red. Justice Khanna was of the opinion that when a specific colour, with a specific pantone number, is applied to the outsole of a shoe, it is unique. In his opinion, the red sole has become well known to fashion only because it was introduced by Christian Louboutin. It should be noted that Indian trademark law does not recognize pantone numbers. It is interesting to see that, in a matter of two years, three judges of the Delhi High Court have shed light on different ways to look at Louboutin’s red sole mark. These decisions may pave way for a debate on the registrability of single colour marks and the significance of pantone numbers, specifically in relation to the restrictive field of fashion, where it is getting easier and easier for big brands to monopolize the industry.

This post is the second of the two-part series on certification marks in India. The previous post talked about the registration of certification marks in India. This post sheds light on the rights conferred on a proprietor of a certification mark, and the enforceability of such marks in India. A proprietor of a certification mark cannot use the mark on and in relation to her own goods or services. Rather registration of a certification mark confers on its proprietor the exclusive right to authorize others to use the certification mark on and in relation to their goods/services provided they meet the standards set out by the proprietor. The use of a certification mark by the authorized user inures to the benefit of the owner such that the owner may be said to be using the mark. This is precisely the reason why registration of a certification mark cannot be challenged for non-use. Under Indian law, the exclusive right to the use of a certification mark, which is conferred on its registered proprietor, is infringed by any person who, not being the registered proprietor of the certification mark or a person authorised by her in that behalf, uses in the course of trade, a mark, which is identical with, or deceptively similar to, the certification mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being use as a trademark. The principles of ‘deceptive similarity’ applicable to trademarks, in the absence of any indication to the contrary, apply fully to certification marks. Clearly, infringement of certification marks, just like trademark and design infringement, is a statutory remedy available only after registration. An obvious question is whether the proprietor of an unregistered certification mark has any remedy in common law. In other words, how can she enforce her rights in an unregistered certification mark against its misuse by third parties? This question appears to remain largely unaddressed by the courts of law not just in India, but also in other jurisdictions. Certification marks may be perceived as a subset of trademarks. Since there appears to be nothing in our jurisprudence that suggests that certification mark holders cannot enjoy common law rights, it may be assumed that, just like trademarks, proprietors of certification marks are entitled to ­the common law remedy of passing-off. Thus, since there is no determinative segregation of certification marks from trademarks, it can be argued that rights in an unregistered certification mark can be acquired through use. Since the phrase “passing-off” itself suggests that its object is to restrain third parties from passing-off their goods or services to the public as those of the proprietor of a mark, this remedy will be available to the proprietor of an unregistered certification mark.  However, the remedy is available only if the use falsely signifies that the unauthorized user has the authority to grant such certification (as opposed to source identification). Thus, if it was never the intention of the defaulting party to pass-off the right of certification conferred in favour of the proprietor of the certification mark as its own right, then the remedy of passing-off won’t be available. Other remedies available to proprietors of certification marks may include misrepresentation, fraud and others under the criminal law in India. Thus, if an entity seeks to mislead the public at large by illegally misrepresenting a connection/ affiliation with the proprietor of a certification mark or by misrepresenting to the general public at large that its products have been certified by the proprietor, then it may be prosecuted under criminal law. Proprietors of certification marks may also choose to register their certification marks as trademarks for certification services. This is, however, possible if the mark also functions as a source identifier, say, if the proprietor’s name itself is the certification mark. Although such an approach comes with the risk of an attack by third parties, it could provide the proprietor the additional remedies of dilution in trademarks and passing-off. To conclude, the owner of a certification mark maintains control over the use of the mark by third parties. Thus, operation of certification marks in a common law regime may result in (increased) anticompetitive abuses, as compared to a statutorily-regulated registration-based regime. Without the fear of cancellation of the mark on account of flawed policing or failure to observe any provisions of the regulations, certification mark owners will have little incentive to strictly abide by the regulations in a common-law regime. Accordingly, registration of certification marks in India is advisable to meet one of the larger purposes they purport to serve…public health and safety!

In 2012, the Delhi High Court recognized that actions against parallel importers were maintainable, albeit in a limited sense i.e. the trademark owner could restrict circulation of parallel imports, if such circulation could be shown to have cause damage/ loss of goodwill [See: Samsung v. Kapil Wadhwa, 194 (2012) DLT 23]. Inevitably, an appeal against the decision is now being considered by the Supreme Court. This post discusses the extent to which the Indian trademark statute protects right holders against parallel importers, and the issues the Supreme court’s upcoming ruling is expected to address. In India, the floodgates were opened after the decision in Samsung by a single judge of the Delhi High Court. In Samsung, the complainant filed a suit to restrain the defendant from selling its printers (procured upon import) on the grounds (a) that the imported products were not meant for Indian markets and have “marked changes”; and (b) that such sales have damaged their reputation. On the other hand, the defendant mounted a defense by arguing that the Indian trademark statute supported the principle of international exhaustion. The Court disagreed with the Defendant’s interpretation because it felt that the statute, in fact, entitles a complainant to limit domestic circulation on grounds of loss of goodwill. Accordingly, the court restrained the defendant from “importing, exporting and dealing” with goods nearing the complainant’s marks. The single judge’s decision was, subsequently, appealed before a two-judge bench of the High Court. The two-judge bench disagreed with the single judge’s reasoning that acquisition of goods through consent of the lawful proprietor, alone, is lawful. Instead, the appellate court ruled that “lawful” parallel imports were theoretically possible under the trademark statute (and would not constitute infringement). Interestingly, the court agreed with the defendant’s argument that India ascribes to the principle of international exhaustion, and that right owners could only restrain parallel imports facilitated unlawfully. Implying that it could not consider the defendant’s parallel imports unlawful under the trademark statute at the pre-trail stages, the court directed the defendants to declare the differences in products to consumers before resuming their trade. The division bench decision has also been appealed to the Indian Supreme Court. While the Supreme court contemplates the final say, it would be worthwhile to examine how courts have ruled on the issue pending a ruling by the Supreme Court. In Western Digital v Ashish Kumar [2016 (68) PTC 554 (Del)], the complainant alleged that the defendant (an importer of computer peripherals) was importing its goods without authorization (although it was unable to verify that the goods were, indeed, parallel imports). The complainant claimed that the defendant’s activities were causing a loss of goodwill because the defendant’s sales were not supported by the complainant’s after-sales services. However, the parties settled on the basis that the defendant would (a) represent to/ inform consumers that their goods are parallel imports and not supported by the complainant’s after-sales services; and (b) provide after-sale services at par with the complainant’s. The court observed this to be a lawful arrangement and decreed the suit in these terms.

While Indian trademark law looks at likelihood of confusion from the point of view of a consumer of average intelligence and imperfect recollection, neuroscience strips the consumer down to a quantum computer of average processing power and limited RAM. As this divergence in a court’s perception of the consumer and that of contemporary scientific literature is expected to narrow over time, this post posits the impact of neuroscience on how courts in India typically address trademark disputes. Neuroscience has established that images, sounds and impressions are linked in a consumer’s minds through neural networks. The very purpose of deploying neuroscience research in formulating brand strategy is to trigger associations in a consumer’s mind between images, sounds and impressions and the source of the product/service. The quicker the association is triggered, the stronger the brand. But, brands do not exist in vacuum, they compete with others for the fastest possible association. Thus, the odds of competing brands triggering multiple associations in a consumer’s mind when exposed to the same word, sound or sensory impression are not entirely implausible – even in the absence of deceptive intent. This begets the question – to what extent does Indian trademark law grant a brand owner exclusivity to encode the fastest possible association in a consumer’s mind? Notably, besides recognizing the likelihood of confusion as a test for infringement, the Indian trademark statute also recognizes the likelihood of association. While consumer confusion conjures imagery of a consumer mistaking one brand for another while purchasing an item or viewing an advertisement, consumer association, though subtler, is also recognized by neuroscience as a harm to brand identity. India, being a common law country, gives judges an active role in developing rules. Thus, although the trademarks statute lists out different situations where a trademark is infringed, the nuances of whether infringement has occurred or not, are provided for in case law and not in statute. In August 2006, the Indian Supreme Court “took note” of the excerpts of the European Court of Justice’s decision in Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc., (1999) RPC 117 (See: Ramdev Food Products v. Arvindbhai Rambhai Patel, Order dt. 29.08.2006 in Civil Appeal Nos. 8815-8816 and 8817 of 2003), where two kinds of consumer association were identified. First, indirect confusion – where the consumer makes a connection between the owners of the rival marks, and is, consequently, confused as to the source of the product/service. Second, association in the “strict sense” – where, although, the consumer makes a connection between the rival marks, he is, ultimately, able to discern the marks and their source. As far as association in the form of indirect confusion is concerned, trademark law’s recognition of the harm provokes little debate. However, as far as association in a “strict sense” is concerned, neuroscientist and psychologists, alike, are yet to find common ground. The proponents of recognizing association in a “strict sense” as a legally redressable harm argue that the greater number of associations that a consumer makes when exposed to a mark, the lesser is its distinctiveness. Thus, the argument concludes, famous trademarks would ultimately sink into the pits of genericity if this kind of dilution is unchecked. On the other hand, the opposing literature argues that famous marks that are not used as frequently in contemporary parlance are, in fact, helped by a multiplicity of consumer associations. Here, I recall a press statement by Mahesh Manjrekar, a Marathi film director, who was the defendant in one of the lawsuits the firm filed i.e. Rubik’s Brand Ltd. v. Mahesh Manjrekar. In April 2016, the Bombay High Court restrained Mr. Manjrekar from releasing a movie with the title RUBIK’S CUBE. After the court’s decision, Mr. Manjrekar went to press stating he thought “the title would help to promote the game further.” It seems, unlikely though, that Indian trademark law would recognize such benevolent associations as a defence to an infringement claim by owners of famous marks. Besides a comparison of the goods/ services and the marks, Indian trademark law also begets a scrutiny of the rival trade channels and consumers in assessing the merits of an infringement claim. Here, neuroscience would also consider relevant – the party whose consumer would be the focus of the analysis. On this basis, neuroscience differentiates blurring and tarnishment from simple piggyback riding – while simple free riding focuses on the behaviour of the newcomer’s customers, blurring/ tarnishment focus on that of the senior user. Piggyback Riding If, for example, a chain of pizza outlets that does business under the brand THOR, exclusively in the United States, were to take issue with an Indian shoe manufacturer using the same mark in India – it is plausible, as per neuroscience, that although Indian consumers do not frequent the pizza outlets, they would, nevertheless, associate the shoe manufacturer to the pizza restaurant – even if they are well-aware of the source. Although there is no direct confusion in this case, as the pizza chain expands its links across the world, the shoe manufacturer would, in a way, free ride on its reputation in India. Moreover, since India ascribes to the principle that trademark rights are considered separate in each sovereign jurisdiction, a situation may develop where Indian consumers recognize that although THOR is associated with pizza chain on a worldwide basis, in India, THOR is a footwear brand. Though neuroscience recognizes this as a long-term harm to brand identity, Indian law would check it only if the pizza chain is able to prove that its worldwide reputation has spilled over into India – which is not a given since margherita pizzas cannot simply be shipped to Indian consumers from outlets abroad. While Indian trademark law would refuse to interfere at this juncture, neuroscience would, nevertheless, cause the pizza chain marketing team to rue to multiplicity of associations triggered by THOR in the minds of Indian consumers. Blurring & Tarnishment While Indian law recognises blurring as initial interest confusion, neuroscience perceives it as the delay in associating